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A hint of a suggestion of a possibility of confusion

Deutsche Post AG applied to register the trade-mark DEUTSCHE POST WORLD NET in Canada in respect of a wide range of wares and services, based on proposed use in Canada and use and registration of the mark in Germany. Canada Post, a Canadian Crown corporation, opposed on a variety of grounds. The Trade-Marks Opposition Board held that there was no likelihood of confusion between the mark in question and any of the opponent’s registered marks, essentially because Canadians are not so parochial as to think that Deutsche Post is operated by Canada Post. However, Canada Post also appealed to section 9(1)(d) of the Canadian Act, which prohibits marks likely to lead to the belief that the wares in question are sold under Canadian government patronage. The Board held that in Canadian law, the test under this provision was not confusion; the mere suggestion of government patronage – that is, patronage of Canada Post – was enough. Accordingly, the opposition was successful, at least in respect of those wares and services that were also provided by Canada Post.

Even if the test is suggestion, rather than confusion, this Kat fails to see how DEUTSCHE POST could suggest Canadian government patronage to a person of average intelligence, even the notional "ordinary hurried purchasers." More generally, it is disappointing to see IP law successfully invoked when one party is not trading on the reputation of another. It is this kind of use (abuse, says Merpel), that gives IP law a bad name.

A hint of a suggestion of a possibility of confusion
Reviewed by Norman
on
Friday, January 20, 2012
Rating: 5

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6 comments:

Even if the test is suggestion, rather than confusion, this Kat fails to see how DEUTSCHE POST could suggest Canadian government patronage to a person of average intelligence, even the notional "ordinary hurried purchasers." More generally, it is disappointing to see IP law successfully invoked when one party is not trading on the reputation of another. It is this kind of use (abuse, says Merpel), that gives IP law a bad name.

Well, well, well... I will blithely indulge in a bit of Schadenfreude. Deutsche Post drank a mouthful of their own medicine, and, for once, got the short end of the stick. If anyone gave IP law a bad name, it is surely DP with their egregious tactics back in the home market. They do not merit sympathy. Postes Canada are in comparison beginners and rank amateurs.

First, a bit of history:

Back in the 1990s, when you could actually still buy "eine Eine-Mark-Marke", the old Bundespost was set on a privatization course after having digested the former GDR's Deutsche Post. The organization was split in three separate corporations, PostBank, Dt. Telekom, and Dt. Post.

Telekom was the first to float shares, and to discover the strategic value of IP. It moved to protect - and vigorously enforce - all descriptions of IP, including a certain shade of purple as well as umpteen expressions beginning with "T-".

When time came for the Deutsche Post to launch their own IPO (around Y2K), some nasty letter arrived [in the post?] from sister Telekom which complained that the DP's trademarks, slogans and marketing strategy for introducing the new stock bore too much resemblance to the previous campaign. Deutsche Post had to postpone and redesign the offering, and presumably lost large amounts of money in the process.

This was a wake-up call and a lesson for DP, if one believes a Berliner Zeitung article. In the early noughties the DP proceeded to massively file trademark applications, [many of them now abandoned] including mundane expressions "sorting center", "registered mail", or mere franking marks. An application was even filed for a trademark containing only the word "Post" in isolation. Opposition is still slowly grinding its way through the system, AFAIK... The incumbent operator is also systematically attacking any trademark applications filed by other parties, and not only those which contain the expression "post". The PIN AG had to change its brand from "PIN Post" to "PIN Mail". Foreign historical operators, such as the Dutch TNT, felt the wrath of the DP too.

Translation: With this [trademark] protection we want to prevent freeloaders from using the Post's good name. [...] The majority of Germans demonstrably associate the word "Post" with the services of the Deutsche Post.

The goal is clearly for all to see: to protect the historical monopoly by any means, including IP law, even after the final blow is administered by the EU.

What's good for the goose is good for the gander, and PC should have a look at the arguments developed by DP...

I don't really see how things could turn any differently when governments try to instill "competition" in what is still really essentially a natural monopoly when it comes to collecting and delivering mail.

The incumbent operator has high fixed costs (universal service and a unionized work force that fought for decent contracts over the years). The new entrants will ruthlessly drive down working conditions, and the incumbent will try to follow. For example, DP mobbed its remaining older staff still employed under the former civil servant status into early retirement or "invalidity", with the federal government footing the bill. PIN AG on the other side found it a scandal that courts found that its letter carriers should be paid at the same [lousy] rate as the competitors.

The incumbent can also try to build a brand, capitalizing on goodwill accumulated over the centuries. The brand's image need not have much relationship with the services actually provided. This is the case with DP too. Branches are closed, rural service is cut. DP acquired DHL and adopted its name, attempting to show itself as a "modern", "competitive" business, whilst at the same time playing the historical public service DP. Thus the aggressive attitude of DP.

Is it right that the historical goodwill be vested with the historical operator? BTW, I wonder how much the Thurn und Taxis would value their "IP" if they were still in the business today.

Another tactic is to expand abroad. This too is tried by DP, which has been trying to break into the Canadian "market", while publicly defending its monopoly at home. According to Le Devoir, PC sued DP over a breach of its monopoly, apparently under Section 14(1) of the Canada Post act. The evidence mentioned in the article, returned mail and a UPU registration, is IMO incontrovertible. It was about at that time that PC also attacked DP's trademark registration.

I don't know how the monopoly breach lawsuit was settled, but things globally don't look too good for PC. The Harper Junta managed to sneak in Section 15(3) of the Postal Act (after two or three attempts) through a 2010 mammoth omnibus bill, which states that the exclusive privilege referred to in subsection 14(1) does not apply to letters intended for delivery to an addressee outside Canada.. This means that what DP apparently did in Montréal in 2006 would no longer be against the law. I think it would also have an incidence in the reasoning of the instant trademark decision, as the services identified in the application are no longer either entirely the preserve of Federal Government acting through Postes Canada, inasmuch as they are offered for destinations abroad. Why this wasn't argued by DP is somewhat mysterious to me. Maybe they are bidding their time?

I wonder how such an amendment is thought of, drafted, and put into a bill. In fact, I think the same question applies to about pretty much any law enacted in any of our sick "democracies".

Concerning DP's trademarks I have some difficulty determining under which name this group is actually trading. I have never seen in Germany "DP - World Net". When I went to the post office it actually said "Postbank" on the door and behind the counter. (These had been divested). I did try to complain on a couple of occasions about parcels which had been abandoned on my doorstep in a busy hallway, and the Post Office told me I should contact "DHL" even though it said "Deutsche Post" on the stamps. I gave up. (In any case, the delivery was made by some overworked and exploited poor devil employed by some fly-by-night subcontractor, as reported in the German press, so it's a good thing I did not press on).

PC should fight back with the methods of DP, if it is allowed to, and be offensive. For example, apply in Canada for succesful DP service trademarks which ar still unprotected here. I can think of a few. Or apply for marks in Germany, and study the DPs reaction.

Eventually one of these lovers will end up having to put up hidden mailboxes marked W.A.S.T.E. and use a muted post horn for a symbol. (cf. Thomas Pynchon).

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